Ex Parte Spurr

Board of Patent Appeals and Interferences

Aug 13, 2004

09784466 (B.P.A.I. Aug. 13, 2004)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte NIGEL VICTOR SPURR
____________
Appeal No. 2004-1599
Application No. 09/784,466
____________
ON BRIEF
____________
Before PAK, WARREN, and OWENS, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
examiner’s final rejection of claims 1 through 7 and 15 through 21.
Claims 8 through 14, the remaining claims in the present
application, stand withdrawn from consideration by the examiner as
being drawn to a non-elected invention.
Appeal No. 2004-1599
Application No. 09/784,466
2
APPEALED SUBJECT MATTER
Claims 1 and 21 are representative of the subject matter on
appeal and read as follows:
1. An actuator assembly comprising:
an actuator drivingly connected by a transmission path to an
output member, said actuator being operable to apply a force in a
first direction to drive said output member in the first direction
from a rest condition to an actuated condition, and also being
operable to apply a force in a second direction to drive said
output member in the second direction from said actuated condition
to said rest condition; and
an energy storing member, in which movement of said output
member by said actuator in said first direction is assisted by said
energy storing member and movement of said output member by said
actuator in said second direction stores energy in said energy
storing member.
21. A method of operating an actuator assembly having an
actuator, an output member, and an energy storing member,
comprising:
driving the actuator to apply a force in a first direction to
drive the output member in the first direction from a rest
condition to an actuated condition;
applying a stored energy force from the energy storing member
in the first direction to assist the actuator in driving the output
member in the first direction;
driving the actuator to apply a force in a second direction to
drive the output member in the second direction from the actuated
condition to the rest condition; and
storing energy in the energy storing member when the actuator
applies the force in the second direction.
Appeal No. 2004-1599
Application No. 09/784,466
3
REJECTION
Claims 1 through 7 and 15 through 21 stand rejected under 35
U.S.C. § 102(b) as anticipated by the disclosure of U.S. Patent
5,180,038 issued to Arnold et al. on Jan 19, 1993 (hereinafter
referred to as “Arnold”).
OPINION
We have carefully reviewed the claims, specification and
applied prior art, including all of the arguments advanced by both
the examiner and the appellant in support of their respective
positions. This review has led us to conclude that only the
examiner’s Section 102(b) rejection of claims 1 through 7, 15 and
17 through 21 is well founded. Accordingly, we only affirm the
examiner’s Section 102(b) rejection of such claims for essentially
those reasons set forth in the Answer and below.
For Arnold to anticipate the claimed subject matter, it must
disclose every feature of the claimed invention, either explicitly
or inherently. See, e.g., Hazani v. Int’l Trade Comm’n, 126 F.3d
1473, 1477, 44 USPQ2d 1358, 1361 (Fed. Cir. 1997); RCA Corp. v.
Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ
385, 388 (Fed. Cir. 1984).
Appeal No. 2004-1599
Application No. 09/784,466
4
Here, there is no dispute that Arnold teaches an actuator
system comprising a reversible direct-current motor 50
corresponding to the claimed actuator connected by a transmission
path (e.g., screw shaft 36) to a movable member 8 corresponding to
the claimed output member, wherein the motor 50 (actuator) is
energized to apply a force in a second direction to drive the
movable member 8 (output member) left from an actuated condition to
a rest condition (the brake-released position), thus compressing
(storing energy in) a main compression spring (30) corresponding to
the claimed energy storing member. Compare the final Office action
dated October 31, 2002, pages 2 and 3, and the Answer, page 3, with
the Brief and the Reply Brief in their entirety; see also Arnold,
column 5, line 64 to column 6, line 20. Nor is there any dispute
that Arnold teaches using a stored energy force (compression) in
the spring (30) (energy storing member) to assist the movement of
the movable member 8 (output member) in a first direction (right)
from the rest condition to the actuated condition. Compare the
final Office action dated October 31, 2002, pages 2 and 3, and the
Answer, page 3, with the Brief and the Reply Brief in their
entirety; see also Arnold, column 6, lines 26-39.
With respect to claims 1 and 21, the appellant only argues
that Arnold does not teach the use of the (actuator) motor (50) to
Appeal No. 2004-1599
Application No. 09/784,466
1 We also agree with the examiner that claim 1 is broader
than claim 21 in that claim 1 merely requires that the motor 50
be “capable” of applying a force in first and second (opposite)
directions to drive a movable member (rather than actually using
the motor to apply a force in the first and second directions to
(continued...)
5
apply a force in the first direction as required by claims 1 and
21. See the Brief and the Reply Brief in their entirety. We do
not agree with the appellant for the reasons set forth by the
examiner in the Answer. Specifically, we observe that Arnold
teaches (column 6, lines 31-39 and column 8, lines 37-42) that:
Main compression spring 30 then expands to displace the
moveable member to the right toward the illustrated brake
applied position. If desired, during this movement of
movable member 8 to the right toward the brake-actuated
position, the electric motor 50 may be operated ... to
control the speed of return travel of the movable
member ....
... said electric motor is a reversible direct-current
motor (50); and further including means for operating
said motor when said movable member is in the brake-
applied position to further drive the movable member in
the brake-applied direction. [Emphasis added].
Implicit in these teachings is that both the electric motor and the
spring assist the movement of the movable member 8 at least during
one point in which the movable member 8 moves toward right (the
brake-applied direction).
Thus, we concur with the examiner that Arnold teaches each and
every feature of the subject matter recited in claims 1 and 21.1
Appeal No. 2004-1599
Application No. 09/784,466
1(...continued)
drive the movable member).
2 Pursuant to 37 CFR § 1.192(c)(7)(2003), we focus on claim
5 since the appellant states that “[c]laims 5, 6 and 7 stand or
fall together.” See In re McDaniel, 293 F.3d 1379, 1384, 63
USPQ2d 1462, 1465-66 (Fed. Cir. 2002).
3 The claims in a pending application are given the broadest
reasonable interpretation (see In re Zletz, 893 F.2d 319, 321, 13
USPQ2d 1320, 1322 (Fed. Cir. 1989)) and limitations from the
application specification are not read into the claims (see
Sjolund v. Musland, 847 F.2d 1573, 1581-82, 6 USPQ2d 2020, 2027
(Fed. Cir. 1988)).
6
The appellant takes the position that Arnold does not teach
the limitations of claims 2 through 4, 15 and 17 through 20. See
the Brief, pages 7-9. In support of this position, the appellant
repeats the same argument indicated above. Id. Thus, we are not
persuaded by this argument either for the same reasons indicated
supra.
The appellant argues that Arnold fails to anticipate the
subject matter recited in claims 5, 6 and 7.2 See the Brief, pages
7-8 and the Reply Brief, pages 2-3. We do not agree. As correctly
found by the examiner at pages 5 and 6 of the Answer, Arnold
discloses employing a crutch spring 70 which is encompassed by the
claimed friction detent mechanism.3
However, claim 16 is on different footing. Although the
appellant asserts that Arnold does not teach that the first and
Appeal No. 2004-1599
Application No. 09/784,466
4 According to page 5 of the specification, the limitation
recited in claim 16 is said to be a further embodiment of the
claimed invention. Figure 1 does not illustrate this further
embodiment of the claimed invention. However, Figure 3
illustrates an actuator assembly which encompasses this further
embodiment of the claimed invention. It appears that this
further embodiment is directed to a non-elected invention.
7
second directions of its movable member are rotational as required
by claim 16, the examiner does not identify any particular
description in Arnold which would have anticipated such subject
matter. Compare the Brief, page 8, with the Answer and the final
Office action in their entirety. Thus, on this record, we are
constrained to agree with the appellant that the examiner has not
establish a prima facie case of anticipation with regard to the
subject matter recited in claim 16.4
CONCLUSION
In summary:
1) The rejection of claims 1 through 7, 15 and 17 through 21
under 35 U.S.C. § 102(b) is affirmed; and
2) The rejection of claim 16 under 35 U.S.C. § 102(b) is
reversed.
Accordingly, the decision of the examiner is affirmed-in-part.
Appeal No. 2004-1599
Application No. 09/784,466
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No time period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
CHUNG K. PAK )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES F. WARREN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
TERRY J. OWENS )
Administrative Patent Judge )
CKP/lp
Appeal No. 2004-1599
Application No. 09/784,466
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